ESTTA Tracking number: ESTTA608862 06/09/2014 IN THE ...

Proceeding Party

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Trademark Trial and Appeal Board Electronic Filing System.

ESTTA Tracking number:

ESTTA608862

Filing date:

06/09/2014

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

92059114

Defendant Standard Homeopathic Company

STANDARD HOMEOPATHIC COMPANY 210 WEST 131ST STREET LOS ANGELES, CA 90061 UNITED STATES

Answer

Patrick J. Gallagher

patrick.gallagher@, katie.solberg@, aoipdocket@

/patrick j. gallagher/

06/09/2014

Answer to Petition for Cancellation.PDF(64226 bytes )

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the matter of Registration No.: 4,256,902 By Standard Homeopathic Company for the Mark: RESTFUL LEGS Registered: December 11, 2012

Biomedical Research Laboratories, LLC, Petitioner,

V.

Standard Homeopathic Company, Inc., Registrant.

Cancellation No. 92059114

ANSWER TO PETITION FOR CANCELLATION Registrant, Standard Homeopathic Company, Inc. ("Registrant"), hereby answers the Petition for Cancellation of Petitioner, Biomedical Research Laboratories, LLC ("Petitioner") as follows. The paragraph numbers below correspond to those numbered paragraphs in the Petition for Cancellation. Registrant reserves the right to amend or supplement this Answer to the Petition for Cancellation as appropriate: 1. Registrant admits the allegations contained in Paragraph 1 of the Petition for Cancellation. 2. Registrant admits the allegations contained in Paragraph 2 of the Petition for Cancellation. 3. Registrant denies the allegation that Petitioner's "CALM LEGS" designation is a distinctive trademark, Registrant is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations in Paragraph 3 of the Petition for Cancellation and

therefore denies the same.

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4. Registrant is without knowledge or information sufficient to form a belief as to the truth of the allegations in Paragraph 4 of the Petition for Cancellation and therefore denies the same.

5. Registrant denies that Petitioner filed an application to register its "CALM LEGS" designation on October 29, 2013, Registrant notes that the records of the U.S. Patent and Trademark Office ("USPTO") indicate that the filing date of the Petitioner's Application for "CALM LEGS" is May 22, 2013. Registrant admits that the records of the USPTO indicate that the Application was filed in International Class 5, assigned Serial No. 85/940,121, and contains the goods alleged by Petitioner in Paragraph 5 of the Petition for Cancellation. Registrant admits that the Application was published for opposition on October 29, 2013.

6. Registrant admits the allegations in Paragraph 6 of the Petition for Cancellation that Registrant filed a Notice of Opposition contesting Petitioner's Application to register "CALM LEGS" on the basis of a likelihood of confusion with three prior registrations for marks owned by Registrant, including U.S. Registration No. 2,090,807 for the mark CALMS and U.S. Registration No. 2,098,928 for CALMS FORTE. However, Registrant notes that its Registration No. 3,508,180 is for the mark CALMS FORTE 4 KIDS, not CALMS FORTE FOR KIDS as alleged by Petitioner in the Petition for Cancellation. Registrant admits its Notice of Opposition against the Application for "CALM LEGS" did not contest the Application based on a likelihood of confusion with Registrant's RESTFUL LEGS mark and Registrant further admits that it is not precluded from amending its Notice of Opposition in Opposition No. 91213729 to seek refusal of Petitioner's Application for "CALM LEGS" based on a likelihood of confusion with Registrant's RESTFUL LEGS mark.

7. Registrant denies the allegations in Paragraph 7 of the Petition for Cancellation, 8. Registrant denies the allegations in Paragraph 8 of the Petition for Cancellation.

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9, Registrant admits that it entered a disclaimer to the term "LEGS" during the USPTO's examination phase of Registrant's application that ultimately resulted in issuance of the Registration. Registrant denies the remaining allegations in Paragraph 9 of the Petition for Cancellation.

10. Registrant denies the allegations in Paragraph 10 of the Petition for Cancellation. 11. Registrant admits that Registration No. 4,256,902 for RESTFUL LEGS was registered on the USPTO's Principal Register on December 11, 2012, and was therefore issued less than five years ago. Registrant further admits that the USPTO did not require Registrant to submit evidence concerning whether the mark RESTFUL LEGS had acquired distinctiveness under Section 2(f) of the Trademark because the USPTO deemed the mark RESTFUL LEGS to be inherently distinctive and registrable on the USPTO's Principal Register without a showing of acquired distinctiveness through secondary meaning. Registrant denies the remaining allegations in Paragraph 11 of the Petition for Cancellation. 12. Registrant denies the allegations in Paragraph 12 of the Petition for Cancellation. 13. Registrant notes that Paragraph 13 of the Petition for Cancellation contains Petitioner's Prayer for Relief and thus it is not necessary for Registrant to admit or deny the statements therein. To extent that the statements in Paragraph 13 for the Petition for Cancellation are deemed allegations requiring admittance or denial, Registrant denies such allegations. To the extent that Registrant has not admitted or denied any allegation contained in Petitioner's Petition for Cancellation, all such allegations are hereby denied by Registrant.

AFFIRMATIVE DEFENSES 1. Registrant reserves the right to assert any and all affirmative defenses of which it becomes aware during the pendency of this matter.

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WHEREFORE, Registrant respectfully requests that this Petition for Cancellation be dismissed, that judgment be entered in Registrant's favor and that Registrant's Registration No. 4,256,902 for the RESTLESS LEGS mark be maintained.

DATED: June 9, 2014

bmitted,

Patrick J. Gallagher Laura J, Borst Shelby Knutson Bruce FULBRIGHT & JAWORSK1 LLP 2100 IDS Center 80 South Eighth Street Minneapolis, MN 55402-2112 Telephone: (612) 321-2800 Facsimile: (612) 321-2288

ATTORNEY FOR REGISTRANT STANDARD HOMEOPATHIC COMPANY, INC.

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